WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Bharti Airtel Limited v. Hashid Hameed, DesiDen
Case No. D2014-0294
1. The Parties
The Complainant is Bharti Airtel Limited of New Delhi, India, represented by Singh & Singh Advocates, India.
The Respondent is Hashid Hameed, DesiDen of Kerala, Calicut, Bangalore, India.
2. The Domain Name and Registrar
The disputed domain name <airtelguru.com> is registered with Domainsite.com (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2014. On February 26, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 27, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 3, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was March 23, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 25, 2014.
The Center appointed Ashwinie Kumar Bansal as the sole panelist in this matter on April 1, 2014. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is engaged in a variety of services including cellular phones, broadband and Internet services, satellite, carrier, international services, calling card, e-business services, etc. The Complainant was originally incorporated as Bharti Tele-Ventures Limited. However, the name of the company was changed to Bharti Airtel Limited and the certificate of incorporation with the new name was obtained on April 24, 2006.
The Complainant uses the trademark AIRTEL and has registered the trademark in India and in several other countries. AIRTEL is the flagship brand and a well-known name and mark. The Complainant owns many domain names incorporating is trademark AIRTEL such as <airtel.com>, <airtel.in>, <airteldigitaldish.com>, <airtelmoney.com>, <airtelmoney.net>, <airtelmoney.org>, <airtelmoney.in>, <airtelworld.in>, <airtelworld.com>, <airtelindia.com>, etc.
The disputed domain name <airtelguru.com> was registered on October 26, 2008.
5. Parties’ Contentions
The Complainant submits that it is one of the leading telecommunications companies with its presence in twenty countries in Asia and Africa and it has large base of 269 million customers as on March 31, 2013. It is the registered owner, user and proprietor of the trademark AIRTEL in India as well as in several countries abroad. It had conceived, coined and adopted the distinctive trademark AIRTEL in the year 1994 for its goods as well as services. Its trademark AIRTEL is a coined word and not a dictionary word and therefore it is entitled to protection of the trademark.
The Complainant further submits that it has spent huge amounts as promotional expenditure to promote the AIRTEL mark and has referred to evidence of its extensive publicity and advertisements. It asserts that due to the widespread use and publicity of the trademark, the public associates the trademark AIRTEL with it. The trademark AIRTEL has become a household word and has acquired the status of a well-known trademark. It owns several domain names, which contain the trademark AIRTEL with or without addition of other word or words. It has cited several cases decided in its favor by Indian courts and by previous UDRP panel decisions.
The Complainant further submits that the disputed domain name is identical or deceptively similar to its trademark and that the Respondent has no rights and legitimate interests in the disputed domain name. The Respondent’s registration of the disputed domain name violates the Complainant’s rights in the trademark. As the Respondent is not connected to the trademark, the Respondent’s registration of disputed domain name constitutes infringement and dilution of the trademark AIRTEL.
The Complainant further submits that the disputed domain name was registered and used in bad faith. Such registration and use exploits its trademark by attracting Internet users. The Complainant apprehends that illegal use of its trademark could cause harm to the goodwill and reputation of its business and therefore requests for the transfer of the disputed domain name to it.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As per paragraph 5(e) of the Rules where a respondent does not submit a response, in the absence of exceptional circumstances, the panel may decide the dispute based upon the complaint. The Panel does not find any exceptional circumstances in this case preventing it from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to file a response. As per paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel is to draw such inferences there from as it considers appropriate. It remains incumbent on the Complainant to make out its case in all respects under paragraph 4(a) of the Policy, which sets out the three elements that must be present for the proceeding to be brought against the Respondent, which the Complainant must prove to obtain a requested remedy. It provides as follows:
“4(a). Applicable Disputes. You [the respondent] are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.”
The Panel will address the three aspects of the Policy listed above.
A. Identical or Confusingly Similar
The Complainant has established that it has registered trademarks rights in AIRTEL in India and a list of registrations granted in India has been given in the Complaint besides a list of trademark applications which are pending registrations has also been given. A number of trademark applications and certificates of registration granted by the Registrar of Trademarks have also been produced along with the Complaint. The trademark AIRTEL has become associated by the general public exclusively with the Complainant. The Complainant also has several domain name registrations incorporating the trademark AIRTEL.
The Respondent has registered the disputed domain name <airtelguru.com> wholly incorporating the trademark AIRTEL of the Complainant, which the Panel finds is sufficient to establish confusing similarity for the purpose of the Policy.
The additional word “guru” succeeding the trademark AIRTEL in the disputed domain name <airtelguru.com> is merely generic and does not avoid a finding of confusing similarity of the disputed domain name with the trademark. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words1. Furthermore, it is established that the generic Top-Level Domain (gTLD) is typically not an element of distinctiveness that is taken into consideration when evaluating the identity or confusing similarity between a complainant’s trademark and a disputed domain name2.
The trademark AIRTEL has been a well-known name in India. The Complainant has successfully contested litigation regarding the trademark AIRTEL before various courts in India and some of the court decisions in this regard have been produced with the Complaint. The Complainant had filed few complaints under the UDRP in respect of domain names containing its trademark, which were decided in its favour and consequently the domain names were ordered to be transferred to it by the panels3.
The Panel finds that the registration of the trademark AIRTEL in India is prima facie evidence of the Complainant’s trademark rights for the purposes of the Policy4. Internet users who enter the disputed domain name being aware of the reputation of the Complainant may be confused about its association or affiliation with the Complainant.
The Panel finds that the disputed domain name <airtelguru.com> is confusingly similar to the trademark AIRTEL of the Complainant.
B. Rights or Legitimate Interests
The Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in the disputed domain name. Nevertheless, it is well settled that the Complainant needs only to make out a prima facie case, after which the burden of production shifts to the Respondent to rebut such prima facie case by demonstrating rights or legitimate interests in the disputed domain name5. The Complainant has registered the disputed domain name consisting of the trademark AIRTEL. The Complainant has been using the trademark for a long time. The Complainant has not authorized or permitted the Respondent to use the trademark AIRTEL. The Panel finds that the Complainant has made out a prima facie case.
Paragraph 4(c) of the Policy lists circumstances, in particular but without limitation, which, if found by the Panel to be proved, may demonstrate the respondent’s rights or legitimate interests in a domain name for the purposes of paragraph 4(a)(ii) of the Policy. The Respondent has not filed a Response to rebut the Complainant’s prima facie case and the Respondent has thus failed to demonstrate any rights or legitimate interests in the disputed domain name as per paragraph 4(c) of the Policy.
Based on the facts as stated above, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy identifies, in particular but without limitation, four circumstances which, if found by the Panel to be present, shall be evidence of the registration and use of the disputed domain name in bad faith. Paragraph 4(b) is reproduced below:
“Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a) (iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Each of the four circumstances in paragraph 4(b) of the Policy, if found, is evidence of “registration and use of a domain name in bad faith”. Circumstances (i), (ii), and (iii) are concerned with the intention or purpose of the registration of the domain name, and circumstance (iv) is concerned with an act of use of the domain name.
The Complainant is required to prove that both that the disputed domain name was registered in bad faith and that it is being used in bad faith because in paragraph 4(a)(iii) of the Policy, the provision contains the conjunction “and” rather than “or” and it refers to both the past tense (“has been registered”) and the present tense (“is being used”). Hence, circumstances at the time of registration and thereafter have to be considered by the Panel. The Complainant is required to prove that the registration was undertaken in bad faith and that the circumstances of the case are such that the Respondent is continuing to act in bad faith.
The Respondent has registered the disputed domain name and he is using the impugned website for providing tips and tricks and giving methodologies to the general public as to how to avail the services of the Complainant for free, which are otherwise chargeable. Thus he is bypassing the services of the Complainant and attempting to attract Internet users to his website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website. The inclusion of a disclaimer does not cure the Respondent’s bad faith conduct. The Complainant has not granted the Respondent permission or a license of any kind to use its trademark AIRTEL and register the disputed domain name. Such unauthorized registration and use of the trademark AIRTEL by the Respondent suggests opportunistic bad faith. The Respondent’s true purpose in registering and using the disputed domain name which incorporates the well-known trademark AIRTEL of the Complainant is, in this Panel’s view, to capitalize on the reputation of the trademark AIRTEL.
The Panel therefore finds that the Domain Name <airtelguru.com> has been registered and is being used by the Respondent in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <airtelguru.com> be transferred to the Complainant.
Ashwinie Kumar Bansal
Date: April 15, 2014
1 See Dr. Grandel GmbH v. Drg Randel Inc., WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co., WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242.
2 See Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Phoenomedia AG V. Meta Verzeichnis Com, WIPO Case No. D2001-0374.
3 See Bharti Airtel Limited, Body Corporate v. Ramandeep Singh, USA Webhost, Inc., Case No. D2010-0524 and Bharti Airtel Limited, Bharti Telemedia Limited v. Airteldigitaldish, Dipak Sharma, Case No. D2010-2270.
4 See State Farm Mutual Automobile Insurance Company v. Periasami Malain, NAF Claim No. 0705262 (“Complainant’s registrations with the United States Patent and Trademark Office of the trademark STATE FARM establishes its rights in the STATE FARM mark pursuant to Policy, paragraph 4(a)(i).”); see also Mothers Against Drunk Driving v. phix, NAF Claim No. 0174052 (finding that the Complainant’s registration of the MADD mark with the United States Patent and Trademark Office establishes the Complainant’s rights in the mark for purposes of Policy, paragraph 4(a)(i)).
5 See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, NAF Claim No. 0741828; AOL LLC v. Jordan Gerberg, NAF Claim No. 0780200.